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A Cease and Desist Demand from Gaijin Entertainment

On Friday, May 3rd, 2013, I received this missive via email in an attached PDF (full text below). In it, Gaijin Entertainment, a company founded in 2002, is claiming trademark infringement over this domain (“gaijin.com”), which I registered on May 22nd, 1995, and which shows content in the Internet Archive as early as November 5, 1996.

On that same afternoon, my attorney Mike Godwin sent their counsel the following email:

That is the most polite way to state how vigorously we dispute your attempt to assert flat ownership of the word “gaijin,” a word so well-established in English that it is an entry in the Oxford English Dictionary.

Currently, I’m advising my client to publicize your demand letter, so that the entire game-consuming public will be made aware of your client’s overreaching trademark assertions. In addition, we will of course continue to make clear that Brandon Harris’s website in no way gives rise to any kind of marketplace confusion of the sort that American trademark law is designed to address.

In the interests of allowing you and your client to gracefully retract your claim, we have chosen to refrain from publicizing your demand until you respond to this message, provided that you respond no later than close-of-business Monday. Since I am currently in DC, Eastern time applies.

–Mike Godwin

P.S. I understand that your clients are possibly Russian nationals. You may wish to explain to them the scope and limitations of the Lanham Act in the United States.

–MG

As the time granted to Mr. Goldstein-Gureff has expired, I am publishing this information.

The text of their letter is as follows, with contact information removed.

Our firm represents Gaijin Entertainment Corporation (“Gaijin”). Gaijin is a well-known game development company that specializes in creating video games for various platforms (PlayStation3/Xbox 360/iOS/PC). Gaijin is the biggest independent PS3, Xbox 360 and iOS games developer in the Russia Federation and an official partner of Activision, 505 Games, Microsoft, TopWare Interactive, SouthPeak Interactive, Sony Computer Entertainment, 1C Company, Apple and many others. Gaijin’s games have received a range of media and game industry awards including such KRI Awards as “Best Simulation Game,” “Best Technology,” “Best sound” and many more. Gaijin also owns, among other intellectual property, a U.S. trademark registration “GAIJIN” (Reg. No. 4,037,227) (“Gaijin Mark”).

It came to our attention that you registered and maintain a website www.gaijin.com (“Infringing Website”) that infringes Gaijin Mark. By maintaining and offering to public your content via the website, i.e., Infringing Website, having the same domain as Gaijin Mark, you create consumer confusion and mistake as to the source, sponsorship and/or affiliation of the
Infringing Website and Gaijin, thereby infringing Gaijin Mark. Consequently, the main purpose of this letter is to demand that you immediately cease and desist from maintaining and offering your content via the Infringing Website or any other site having the domain substantially similar to Gaijin Mark. Gaijin also demands that you immediately transfer the Infringing Domain to Gaijin.

If you wish to amicably resolve this matter, we should hear from you not later than five days from the date of this letter regarding the demands listed above. Should we not receive your response that would be satisfactory to our client, we intend to undertake all legal actions and seek statutory and actual damages (including punitive damages and attorneys’ fees) afforded to our client under applicable law and equity, including, without limitation, pursuant to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).

This letter is written for the purpose of bringing to an end the illegal activities described above and with a view of potential settlement of our client’s claims and may not be used by you for any other purpose whatsoever without our written consent. Our client reserves all rights granted to it by law and specifically reserves the right to withdraw any offers before they are
accepted or before any payments are made and to avail itself of any enforcement, legal action or relief available to him in law or equity. Additionally, this letter is without prejudice to all further rights our client or its publishers, licensors or licensees may have, including, without limitation, rights to injunctive relief, profits, damages, statutory damages, royalties and attorney’s fees. Should you have any questions, please address any communications regarding this matter to us as follows:

Comments (41)

When I hear (or see) Gaijin, I always think of you first ever since ’97 or ’98 when I first saw this site (looked a bit different then but still green!). I also working in the gaming industry for awhile and I had never heard of Gaijin applied to video games before you mentioned it.

I have recently chosen to call myself Brenda as well, and am troubled to see that you are using the same name. This can cause confusion, and I insist that you stop using the name Brenda and call yourself something different.

Damion is referring to an ancient SFNet meme, wherein I would log as an account “/DEV/NULL”, and describe how I was the reason for all your woes.

/DEV/NULL is the reason you fear the night.
/DEV/NULL is the reason your checkbook does not balance.
/DEV/NULL is the reason your girlfriend is cheating on you.
/DEV/NULL is the reason your cat is pregnant.

You laugh but ages ago “Gene Simmons” of the band KISS trademarked “O.J.” in reference to Orange Juice – that’s why in years past you would hear commercials, “Don’t for get your OJ” and now it’s “Don’t forget you orange juice”. I think I read he charges USD 1,000 per use of the word for commercial purposes.. LOL

The story goes that he was goofing around and discovered that no one had trademarked the name so he did just for kicks and now history is set..Don’t say O.J. in reference to Orange Juice or you could get one of those letters.

I got here via the Gaijin company forums. Anything relating to this is likely to be deleted. (They’re not known for their openness to criticism) so i’m just here to say, good luck, and I hope you guys win whatever happens next!

This whole thing comes as NO surprise to me anymore. They can barely handle game balance or clear development priorities, hell they’ll even lie on Steam forums about game features that are bugged but “working”. Makes sense they’d be just as inept at legalities. I truely hope you win, and should the opportunity present itself please tell them to blow it our their collect arses.